Deconstructing “Orphan Works”

August 14, 2019

By Jacqueline Crispino.

When Cornell University Library attempted to digitize 343 “in-copyright but out-of-print monographs” in 2005, the project staff reported that they were able to locate only half of the rightsholders.^[1] Unfortunately, it is quite common in the United States and Europe to find that many works of art, whether photographs, articles, or works of fine art, do not have readily known creators, also known as “orphan works.” In fact, many libraries and archives experience the same frustrations when they attempt to digitize their collections. Anyone from filmmakers to professors who would like to use an image or text which is ultimately found not to have a known author or rightsholder might be reluctant to use that work for fear of infringing copyright. Thus, ownerless, orphan works have the potential to deny communities access to knowledge and encourage infringement of copyright laws.^[2] As Maria Pallante, former Director of the U.S. Copyright Office and the current president and CEO of the Association of American Publishers, says, “it is not a good policy to protect a copyright when there is no evidence of a copyright owner.”^[3] If both are true, what can consumers, artists, or anyone else do when they want to use an orphan work, and what are some possible solutions to orphan works in the future?

What Are Orphan Works?

According to the U.S. copyright office, the official definition of an orphan work is “any original work of authorship for which a good faith prospective user cannot readily identify and/or locate the copyright owner(s) in a situation where permission from the copyright owner(s) is necessary as a matter of law.”^[4] The case of Authors Guild, Inc. v. Hathitrust further defines an orphan work as one that is out-of-print.^[5] One example of an orphan works collection is the vinyl catalog of forgotten country music artist Billy Mize. His grandson, William J. Saunders, wanted to use his music for a documentary, but was unable to identify the rightsholders of the music because many of the record companies that originally owned the rights no longer exist.^[6]

In the United States, the problem with orphan works stems from changes in copyright law. The Copyright Act of 1976, for example, gave copyright protection to works on the “first fixation of the work,” rather than on the day they were published.^[7] While the 1909 Copyright Act allowed a work to be copyrighted for two terms of 28 years each, the 1976 reform allowed a copyright term to extend from the author’s life to 50 years thereafter.^[8] Subsequently, the Copyright Term Extension Act of 1998 (a.k.a. the Sonny Bono Copyright Act) further extended copyrights for life of the author plus 70 years thereafter.^[9] In light of these extensions, it has become much easier for rights to linger but ownership information to be missing or inaccurate.^[10]

Perils of Reproducing Orphaned Works

Using an orphan work for any purpose can result in a violation of copyright laws and a lawsuit. The increasing number of orphan works complicates the production artist’s works as well as the digitization of libraries’ collections. For example, artists or filmmakers might be inspired to include orphan works in their artworks or films and documentaries. Libraries also may to digitize orphan works to add them to their archives. In fact, libraries, such as Cornell University’s, invested significantly into trying to locate the rights holders of orphans works so that those works could be digitized.^[11]

Despite one’s best efforts, the identify of the copyright owners might only emerge once the rights are infringed; a rightsholder might only choose to come forward at that time. There have been several lawsuits as a result of organizations attempting to use orphan works in digitized libraries, including the leading case about the Google Books project. In this case, the Authors Guild sued Google in 2005 because the latter digitized their members’ books without requesting permission, even though Google Books only provided “snippets” of copyright protected books.^[12] In 2008, the authors, publishers, and Google reached a settlement, which was amended in 2009. The settlement required that Google pay money to a database called the “Books Rights Registry” that would then be distributed to rightsholders.^[13] Although the case was not directly about orphan works, money meant for works that were actually orphan works would have been used to find the copyright owner. The case then states, “After ten years, unclaimed funds may be distributed to literary-based charities.”^[14] The case was reargued on appeal in 2011 when Judge Denny Chin denied the settlement agreement, in 2012 when the plaintiffs once again settled with Google, and in 2013 when Judge Chin granted Google’s fair use defense.^[15] Ultimately, in 2015, the Court of Appeals for the Second Circuit affirmed that Google’s use of these scanned works classified as fair use.^[16]

In a similar case, thirteen universities founded the Hathitrust Digital Library (“HDL”) in 2008, which reproduced and made available online book collections of the members libraries. In the resulting lawsuit brought by the Authors Guild, the Second Circuit had to determine whether the use of copyrighted materials in a digitized form is protected under the constitutionally sanctioned concept of the fair use of a copyrighted work. The court ultimately affirmed that it did.^[17]

A second aspect of this case involved how the University of Michigan organized a project aimed at publishing a list of orphan works so that their rightsholders could come forward and claim them, the Orphan Works Project (“OWP”).^[18]

Following the launch, the University would publish works that still remained unclaimed for the benefit of OWP’s patrons. The Authors Guild and other authors groups jointly filed a complaint against HDL in 2011 because the plaintiffs alleged they were easily able to find the authors of these “orphan works” and they believed the project was not just for orphan works. Subsequently, the University of Michigan put their project on hold indefinitely.^[19] Consequently, although the Second Circuit ruled that the Hathitrust Digital Library was protected under the constitutionally sanctioned doctrine of fair use, it held that the publication of orphan works under the OWP was “not ripe” for adjudication because the court did not find that the database would “inevitably infringe” the copyright of the plaintiffs as the project had been abandoned.^[20] In the end, copyrights that were hard to clear put an end to a potentially useful project that could have given a second life to materials in the library’s collection. Unfortunately, the OWP was the only one of its kind.^[21]

What to Do in the Case of Orphan Works

One important question for artists is what should they do if they find a work that might be an orphan work but they still want to use it. First, they should investigate if the work is in the public domain, i.e. out of copyright, in which case such works can be used without permission.^[22] If it is not out of copyright, the next step would be to attempt to locate the author or artist. Readily available databases that anyone can use for this purpose include WATCH, which stands for “Writers, Artists, and Their Copyright Holders”, maintained jointly by the Harry Ransom Center of The University of Texas at Austin and the University of Reading Society of American Archivists Library.^[23] If it appears that the author or artist is dead, the Society of American Archivists recommends to look for their possible heirs or relatives on Ancestry.com, FamilySearch, or even by conducting a Google search.^[24] If the author’s date of death is unknown, checking with surrogate’ courts in the place where the author died or checking the Social Security Death index is a logical next step, or the above search engines, to see whether the work is out of the public domain.^[25] If the right holders cannot be located, the work in consideration probably is an orphan work.

One intellectual property attorney, Louis Smoller, argues that users should become familiar with the rules governing the duration of copyrights and the fair use of artworks because the use of the orphan work might qualify as fair use.^[26] In that case, the search for the author or artist would not be necessary. Fair use essentially allows a user to use another’s work without permission, which would be a convenient solution in the case of an orphan work. Smoller explains that fair use, which stems from the copyright clause in the U.S. Constitution, encourages Congress to “promote the progress of science and useful arts.”^[27] The fair use analysis relies on the balance of four factors, including the purpose of the use (such as news reporting, scholarship, research, and criticism,meaning whether the person claiming fair use changes the original works enough to create a “new expression, meaning, or message.”^[28] Whether an artwork conveys a “new expression, meaning, or message” can be arbitrary and often ends up being subject to a court’s discretion. Regardless of whether the work is an orphan work, the amount of the original work used in the new artwork is also taken into consideration.^[29] According to the U.S. Copyright Office, the Library Copyright Alliance (LCA) argues that courts would likely allow the digitization of individual orphan works for noncommercial and educational purposes, because they have allowed the digitization of millions of non-orphan works.^[30] However, there is no hard and fast rule about fair use so it still would be risk to assume fair use.^[31]

Possible Solutions to the Problems Presented by Orphan Works

Lawyers, artists, and other engaged in the orphan works debate have suggested possible ways to solve predicament facing users of orphan works. While the following is not intended to provide legal council or offer a comprehensive checklist, it provides a brief introduction to how the problem of orphan works may be addressed in the future.

1. Legislation: More than 10 years ago, the 109th and 110th Congresses proposed to solve the issue of orphan works is to enact legislation in the United States that specifically addresses the issue. The proposed Shawn Bentley Orphan Works Act of 2008 (S. 2913) and the Orphan Works Act of 2008 (H.R. 5889) almost did just that, but although they passed both the House and Senate (in slightly different forms), they were not enacted before the Congress adjourned.^[32] These bills would have limited the consequences for copyright infringement on orphan works if the user had first undertaken proper searches or used appropriate “notice or symbol in association with any public distribution, display, or use of the work.”^[33] Also, the bills would have provided exceptions for users of orphan works in the context of nonprofit educational institutions, museums, libraries, and archives.^[34]
2. Database: Alternatively a solution which does not require changing the laws is to create a database that has a list of orphan works, such as the OWP from the University of Michigan. The European Union Intellectual Property Office already created such a database in October 2012 as part of Directive 2012/28/EU of the European Parliament.^[35] Europe in general is more active in trying to find solutions to the orphan works problem. One problem with this solution for users in the United States is that the U.S. courts had decided that the claims against OPW in the aforementioned Hathitrust case, which suggests that it might not be possible for Americans to create such a database at this time.
3. Blockchain: Although creating a database with all of the orphan works might not be possible in the United States, publishing a database that aims to collect and publicize information on orphan works could be using up-and-coming technology such as blockchain. Blockchain technology uses a “cryptographic algorithm” similar to the ones used to secure credit card transactions or to text via wifi apps such as iMessage or Whatsapp.^[36] One idea is using a blockchain where every search for an owner’s work could be recorded to prove and encourage a diligent search for rightsholders. A blockchain could also record every search for the rightsholder so it could provide proof of a “diligent” search.
4. Best Practices: Some people who encourage fair use as a solution as mentioned earlier, may also encourage coming up with “best practices,” i.e. a set of “documented standards” that members of the industry would follow to apply fair use exceptions.^[37] For example, the Association of Research Libraries’ created a Code of Best Practices in Fair Use for Academic and Research Libraries.^[38] If users adopt best practices they would be less likely to run afoul of copyright laws. At this time, there is no such available set of best practices for orphan works, but following the ARL’s fair use practise is already is a good start.
5. Exception-based Model: An exception-based model, one that is popular in both the European Union and Australia, would involve the United States “establish[ing] exceptions to the exclusive rights of orphan works,” which could allow users to take advantage of orphan works without infringing copyright.^[39] In such cases, the users would have to prove that they have met certain requirements, including, for example, a diligent search for the work’s rightsholder.^[40] While the exception-based model is helpful in that it allows those who take the appropriate measures to legally use orphan works, one concern is that it might only exempt a “limited class of works” as the EU does.^[41]
6. Limiting Remedies: Although the proposed legislation above did not become law, the U.S. Copyright Office still recommends that “limiting the liability exposure of good faith users,” one of the alterations that the law would have made, is a worthwhile goal. They believe, however, that legislative change is necessary to reach this goal.^[42]

Conclusion

While there are no studies in the U.S. to state how many orphan works currently exist, it is estimated that as many as half of Hathitrust Digital Library’s works, over 10 million works, are orphan works.^[43] As Hathitrust’s collections grow, new orphan works will likely be discovered. Unfortunately, the problem of using orphan works will not be solved in the immediate future, but lawyers, politicians, and libraries are continuously and actively working to provide solutions. It is probable that one day there will be legislation similar to the failed 2008 bills or the creation of a database that would help provide missing copyright holder information and protect users from lawsuits. Change in some form, whether legislative or practical, is necessary to allow the public to have access to historically relevant and legally inaccessible documents.

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1. Pamela Samuelson, Jennifer M. Urban, David R. Hansen, Kathryn Hashimoto, Gwen Hinze, Solving the Orphan Works Problem for the United States, Berkeley Law Scholarship Repository 1, 8 (2013); Response by the Cornell University Library to the Notice of Inquiry Concerning Orphan Works, Comment OW0569, 1-2 (2005), https://www.copyright.gov/orphan/comments/OW0569-Thomas.pdf. ↑
2. Jake Goldstein and Dan Hunter, Blockchains, Orphan Works, and the Public Domain, 41 Colum. J.L. 1 & Arts. 1, 2 (2017). ↑
3. Maria Pallante, Keynote Address: Orphan Works & Mass Digitization: Obstacles & Opportunities, 27 Berkeley Technology Law Journal. 1251, 1251 (2012). ↑
4. Orphan Works and Mass Digitization: A Report of the Register of Copyrights, United States Copyright Office. 1, 9 (2015). ↑
5. Authors Guild, Inc. v. HathiTrust, 755 F.3d 87, 92 (2d Cir., 2014). ↑
6. Jack I. Lerner, Rom Bar-Nissim, Michael C. Donaldson, In the Matter of Orphan Works and Mass Digitization, United States Copyright Office Library of Congress (Docket No. 2012-12 2014). It is sometimes difficult to identify an orphan work when looking for illustrations and the Center thanks Robert Stein for his suggestions. ↑
7. Samuelson, Urban, Hansen, Hashimoto, Hinze, Solving the Orphan Works Problem for the United States at 12. ↑
8. Judith B. Prowda, Visual Arts and the Law: A Handbook for Professionals, Lund Humphries 57 (2013). ↑
9. Id. ↑
10. Orphan Works and Mass Digitization at 10. ↑
11. Samuelson, Urban, Hansen, Hashimoto, Hinze, Solving the Orphan Works Problem for the United States at 8. ↑
12. Orphan Works and Mass Digitization at 13. ↑
13. Id. at 14 (citing Google I, 770 F. Supp. 2d 666 at 671-72; Google Books Am. Settlement, supra note 34, § 6.3(a)(i)(3)). ↑
14. Google I, 770 F. Supp. 2d 666 at 671-72; Google Books Am. Settlement, supra note 34, § 6.3(a)(i)(3)). ↑
15. Orphan Works and Mass Digitization at 15-6. ↑
16. Authors Guild v. Google, Inc., 804 F.3d 202, 202 (2d Cir., 2015). ↑
17. Authors Guild, Inc. v. HathiTrust, 755 F.3d 87, 105 (2d Cir., 2014). ↑
18. Id. at 92. ↑
19. Authors Guild, Inc. v. HathiTrust, 902 F. Supp. 2d 445; 449 (S.D.N.Y. 2012). ↑
20. Authors Guild, Inc. v. HathiTrust, 755 F.3d at 104. ↑
21. David Hansen, Digitizing Orphan Works: Legal Strategies to Reduce Risks for Open Access to Copyrighted Orphan Works, Harvard Library 1, 16 (2016). ↑
22. Orphan Works: Statement of Best Practices, Society of American Archivists 1, 2 (2009). ↑
23. Id. at 7-8. ↑
24. Id. at 6. ↑
25. Id. at 16. ↑
26. Louis Smoller, Using Orphan Works (Copyright Holder Can’t Be Located), Artrepreneur. Smoller also specializes in entertainment, media, and commercial law. ↑
27. Smoller, Using Orphan Works, Artrepreneur. ↑
28. Id. ↑
29. Id. ↑
30. Orphan Works and Mass Digitization at 42. ↑
31. Smoller, Using Orphan Works, Artrepreneur. ↑
32. Orphan Works and Mass Digitization at 11. ↑
33. Id. at 12. ↑
34. Id. ↑
35. Directive 2012/28/EU of the European Parliament and of the Council of 25 October 2012 on certain permitted uses of orphan works, Official Journal of the European Union 5, 7 (2012). https://eur-lex.europa.eu/LexUriServ/LexUriServ.do?uri=OJ:L:2012:299:0005:0012:EN:PDF. ↑
36. Jake Goldfein and Dan Hunter, Blockchains, Orphan Works, and the Public Domain, 41 Colum. J.L. & Arts 1 (2017), 8. ↑
37. Orphan Works and Mass Digitization at 44. ↑
38. Samuelson, Urban, Hansen, Hashimoto, Hinze, Solving the Orphan Works Problem for the United States at 28. ↑
39. Orphan Works and Mass Digitization at 47. ↑
40. Id. ↑
41. Id. at 47-8. ↑
42. Id. at 50. ↑
43. Samuelson, Urban, Hansen, Hashimoto, Hinze, Solving the Orphan Works Problem for the United States at 8. ↑

About the Author: Jacqueline Crispino is a Summer 2019 intern for the Center for Art Law. She is a recent graduate from Georgetown University with a double major in classical studies and history. She will join the Berkeley Law Class of 2022 this fall. Jacqueline can be reached at jc2454@georgetown.edu.